Reconceptualising Barbie

- Barbie has now become a quintessential cultural icon. However, this transcendence to
the status of a cultural icon poses a problem for trademark law. When trademarks like
“barbie” become a part of language and start serving as foundations for evocative
metaphors, trademark law struggles to determine the legality of any secondary use of
the mark.
- Barbie has not only become a symbol for femininity, it is also used for political and social
discourses now. (for instance, the Abortion Barbie poster in the US). There is a conflict
between Mattel’s interest in protecting the usage of the Barbie doll product and the
public interest in manipulating the Barbie image to produce new meanings for the larger
cultural discourse.
- Origins from a German working doll and the importance of sexual fission. The German
doll Lilli was modelled as an underemployed secretary “hooking” to make ends meet.
Mattel made minor changes to this, and birthed Barbie.
- The criticism and scrutiny accrued by Barbie is explained in terms of Barbie’s Double
Bind. This double bind comes into picture when you have very few options in any
situation, and all the options have detrimental consequences. Barbie embodies this
double bind because she has been celebrated as the prototypical woman, yet she is
blamed for creating unrealistic expectations of women.
- Mattel’s attempts at improving the Barbie image Mattel’s litigative appetite
- Mattel has not welcomed a reinterpretation of the brand image associated with Barbie
and has taken many to trademark courts.
- • Counteracting market realities with litigation
- • Trademark Bully - Mattel not only abuses the legal system but is also responsible for
causing harm to competition and speech interests.

Mattel v. MCA Records - The Aqua’s Barbie Girl song.

- Mattel claimed Trademark Infringement, dilution and unfair competition against MCA for
the allegedly “adult-oriented” lyrics.
- MCA claimed the doll has been seen as a feminist and anti-feminist; as seductive and as
wholesome; as intelligent and as a dumb blonde. MCA claimed that Barbie has been
hailed as both a role model and has been condemned as the cause of eating disorders.
- With fame comes unwanted attention
- The main issue here was whether the song is a parody or not. If it was found to be a
parody, then it would have constitutional protections and safeguards.
- The district court suggested that the song comments on the shallow, plastic values
which Barbie has come to represent in social circles. Court said that the secondary use
by MCA was attributive rather than commercial, and that the minimal possibility of
consumer confusion was outweighed by free speech interests.
- For the dilution claim, court said that the song qualifies as a non-commercial use, and
does not accrue any liability within the dilution framework.
- In the court of appeals, it was noted the secondary use was dilutive but qualified for the
non-commercial speech defense. The findings of the district court were affirmed. The
 court affirmed the recoding of intellectual property symbols to produce new meanings for
the larger cultural discourse.

Mattel v. Walking Mt. Prods. Ltd.

- In 1997, Thomas Forsythe published a series of 78 photographs titled Food Chain
Barbie. The photos were an attempt to Deglamourize Barbie Skewer the Barbie myth
Expose an undercurrent of dissatisfaction with consumer culture.
- The series attempted to critique the objectification of women associated with Barbie.
Barbie is the most enduring of those products that feed on the insecurities of our beauty
and perfection-obsessed culture.
- Suit for trademark, trade dress and copyright infringement.
- Court held that Forsythe’s use of the copyrighted Barbie was fair use and therefore
inactionable. For trademark law to regulate artistic and commercial speech, the public
interest in avoiding confusion shoul outweigh the public interest in free expression. The
court concluded that the photographs constituted Forsythe’s social view and qualified for
the non-comercial speech exception.

Mattel v. Aman Bijal Mehta

- Primary contention:song titled “barbie girl” the song was suggestive of an adult woman
who is sexually attractive and enticing
- infringement , dilution and defamation
- Court took notice of Walking Mt. Prods. and MCA and held: India has the benefit of one
of the most modern and liberal Constitutions, one of the most cherished rights wherein is
to speak one’s mind and write what one thinks.
- Court relied on mattel v MCA- courts are not censor boards. If CBFC approved the film,
it is not defamatory
- Defendants withdrew references to barbie - premature withdrawal
- However, given the language employed by the court in its interlocutory opinion and their explicit allusion to
Barbie's cultural resonance and the American legal decisions, the Indian court could have adopted a
counterbalancing approach,

Mattel v. 3894207 Inc.

- Restaurant chain using the name Barbie’s, generated a lot of sales
- Owner of restaurant applied for trademark “barbie’s”. mattel objected saying exclusive
use of barbie mark vests with mattel
- Board rejected mattel’s appeal. Federal court said - no likelihood of confusion
- Primarily commercial dispute, no concern of speech or denigration of goodwill
- the court relied on the traditional test for Confusion and did not adopt a novel test as was the case in the two
American decisions
- Court- fame associated with the Barbie mark is only a "surrounding circumstance"and cannot deliver the proverbial
knockout blow in a confusion analysis.
- Since Canadian trademark law does not allow dilution and misappropriation as grounds
for opposing trademark applications, the court was unarmed by concerns of
misappropriation or denigration of goodwill.
Barbie, Parody and Free Speech
- Finding of parody is not dispositive of liability, but activates free speech concerns-
enables defendant to counteract trademark protections with constitutional safeguards
- What is a parody? A simple form of entertainment conveyed by juxtaposing the
irreverent representation of the trademark with the idealised image created by the mark
owner. The definition of parody has been the subject of legal inquiry, with courts defining
it as a humorous and critical commentary that relies on the recognition of the original
trademark. Parodies are often protected by free speech and constitutional safeguards,
but are subject to scrutiny within the trademark dilution doctrine.
- While distinct from the original mark, the parody relies on fame of the original mark to
make its point.
- Parody inevitably offends others because it so often ridicule[s] sacred verities and
prevailing mores.
- In India, the judiciary has emphasized the importance of expressive secondary use of
trademarks and limited the ability of trademark owners to control the semiotic landscape.
(tata v greenpeace). Parody paradox- more popular a mark, the more vulnerable it would be to a
parodic reinterpretation.
- Canada's trademark doctrine also protects parodies, but the commercial nature of
secondary use looms large and there is no exception for parodic uses in trademark
disputes. Qualifying as a parody and gaining subsequent protection is relatively more
difficult in Canada than it is in India or the United States. Constitutional safeguards
inform confusion analysis and dilution claims. Court in US and india determined that
secondary use of barbie qualifies as parody.
- In MCA, Walking Mt. Prods. and Aman Bijal Mehta, the Courts underlined the parodic
nature of the defendants works
- Judge Byrne: Because this court finds that the song Barbie girl is a parody, it will also
consider the Defendants’ first amendment interest in commenting on the popular brand
name when evaluating plaintiff ’s infringement claims.

Barbie and Trademark infringement

- • The traditional test of confusion fails to account for the full weight of public interest in
free expression.
- • American Balancing Test (Rogers balancing Test in Rogers v. Grimaldi): judicial
interference is warranted only when public interest in avoiding consumer confusion
outweighs the public interest in free expression. Two-step test: 1) the title has no artistic
relevance to the underlying work whatsoever or, 2) if it has some artistic relevance,
unless the title explicitly misleads as to the source or the content of the work
- The courts in Mattel v. MCA ("MCA II") and Walking Mt. Prods. noted that when
trademark law potentially impinges on freedom of speech and expression, the traditional
test of confusion fails to account for the full weight of the public's interest in free
expression. In both cases, the defendants used the Barbie mark in an artistic and
expressive secondary use, and the court found that such use did not mislead as to the
source or content of the work, and therefore did not cause actionable confusion. Both
cases satisfied the Rogers test.
 - Trade dress infringement claims- where the court held that even Barbie's trade dress
"plays a role in our culture," and its secondary use would engender similar First
Amendment concerns brought forth by the use of the Barbie trademark. The court
decided to conclude the analysis on a much narrower ground: the nominative fair use
exception, which allows the use of the trade dress or mark when it is grounded in the
defendant's desire to refer to the plaintiff's product as a point of reference for the
defendant's own work.
- The Delhi High Court in Dr. Reddy's v. Eros, held that "entertainment, literature and
other art forms should not be critiqued on by Courts or pertinaciously restrained from its
release to the masses…the discomfort generated by an artist's expression cannot be
ground for silencing ideas at the altar of maintaining corporate's goodwill." In India, while
it is unclear if an expressive secondary use would warrant a novel confusion analysis, it
is clear that within the court's analysis, constitutional concerns and safeguards will
assume a significant role.

Barbie and Trademark Dilution

- Traditional focus of trademark law on mitigating consumer confusion and the dilution
doctrine, which protects a trademark's selling power. The dilution doctrine explicitly
dissociates from the traditional focus of trademark law and has various statutory
exceptions, including the non-commercial secondary use.
- In the US, the non-commercial secondary use exemption is interpreted as a general
exemption for constitutionally protected forms of expression and criticism - If the speech
if not ‘purely’ commercial it is entitled to first amendment protection. Even if it is dilutive,
as seen in both cases. The decisions therefore include a broad range of mixed
communication into the bracket of first amendment protection. Mere existence of
expressive secondary use would qualify the Defendant’s use for the non- commercial
speech defence
- India also has a due cause limitation that limits dilution protection, and a justifiable or
probable reason for secondary use triggers the due cause limitation. Any tenable
explanation or justifiable or probable reason. Denominative, expressive and non-
trademark use qualifies as due cause. Even a commercial use will qualify for protection if
it is expressive and constitutes a comment or criticism or amounts to non trademark use.
- In Canada, Canadian trademark law does not consider dilution as a ground of
opposition. but the dilution doctrine is limited to secondary use in association with wares
and goods. The Canadian dilution doctrine cannot be activated unless the secondary
use designates goods or services.